DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haishi et al. (WO 2019/117112, attached, using US 2021/0172897, previously cited, as an equivalent English translation).
Claim 1: Haishi teaches an electrode film including a flexible substrate and an electrically conductive carbon layer disposed at one side (i.e. in this order) in the thickness direction (paragraph 0010). The flexible substrate has a film shape and the material more preferably is a polyester resin (i.e. a resin film) (paragraph 0025). The electrically conductive carbon layer is formed from carbon having an sp2 bond and an sp3 bond (paragraph 0049).
Haishi does not specifically teach the instantly claimed thermal shrinkage. However, this feature is a material property. Haishi teaches the ratio of sp3/sp2 is 0.05 or more and 2.00 or less (paragraph 0050) (i.e. recalculated as a ratio of sp3 to a sum of sp3 and sp2 which is about 0.33 to 0.95). The electrically conductive carbon layer has a thickness of 1 nm or more and 500 nm or less, preferably 100 nm or less, more preferably 50 nm or less (paragraph 0052) and is deposited preferably using a sputtering method from a target material of carbon with inert gas and under an atmospheric pressure of 1 Pa or less at a temperature of 200°C or less, more preferably 70°C or less (paragraphs 0074-0079). This compares to the instant disclosure of the ratio (sp3/sp3+sp2) is 0.10 or more and for example 0.9 or less (paragraphs 0028-0029 of the instant specification), having a thickness of 0.1 nm or more and 100 nm or less (paragraph 0033 of the instant specification), and deposited preferably using a sputtering method from a target of carbon with inert gas at a pressure of 1 Pa or less and a temperature of for example 150°C or less (paragraphs 0040-0042 of the instant specification) Each of these conditions and features of the conductive carbon film taught by Haishi substantially overlaps the conditions and features of the conductive carbon film of the instant application. Therefore, the material properties recited in the instant claim(s) are considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Claim 2: Haishi teaches the ratio of sp3/sp2 is 0.05 or more and 2.00 or less (paragraph 0050) (i.e. recalculated as a ratio of sp3 to a sum of sp3 and sp2 which is about 0.33 to 0.95), which lies within the instantly claimed range. See MPEP § 2131.03.
Claims 3-4: Haishi does not specifically teach the density of the conductive carbon layer. However, the density is a property resulting from the material and the manner of treatment. In this regard, Haishi teaches substantially identical conditions and features of the conductive carbon film compared to the conductive carbon film of the instant application, as outlined above regarding claim 1. Therefore, the material property of density is considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/914,441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘441 application both recite an electrode comprising a resin film and a conductive carbon layer in order in a thickness direction and the conductive carbon layer having an sp3 bond.
Instant claim 1 differs from claim 1 of the ‘441 application insofar as reciting a thermal shrinkage. However, this limitation is a material property. In this respect, the ‘441 application discloses that a ratio of the number of sp3-bonded atoms to the sum of the number of sp3-bonded atoms and the number of sp2-bonded atoms is 0.25 or more (paragraph 0007) and a thickness of the conductive carbon layer is 0.2 nm or more and 50 nm or less (paragraph 0009) formed by a dry method, preferably sputtering, from a sintered carbon target in sputtering gas that includes inert gas at a pressure of 1 Pa or less and a forming temperature of 100°C (paragraphs 0040-0042). This disclosure compares to the instant application of a ratio of the number of sp3-bonded atoms to the sum of the number of sp3-bonded atoms and the number of sp2-bonded atoms is 0.10 or more (paragraph 0007 of the instant specification) and a thickness of the conductive carbon layer is 0.1 nm or more, preferably 0.2 nm or more, and 100 nm or less, preferably 50 nm or less (paragraph 0033 of the instant specification) formed by a dry method, preferably sputtering, from a sintered carbon target in sputtering gas that includes inert gas at a pressure of 1 Pa or less and a forming temperature of 150°C (paragraphs 0040-0042 of the instant specification). Each of these ranges of the ‘441 application regarding the conductive carbon layer lies within the ranges of the instant application, and therefore the conductive carbon layer is considered to be substantially identical materials. Furthermore, the ‘441 application discloses the material for the resin film to be preferably polyester resins, more preferably polyethylene terephthalate, and having a thickness of 2 µm or more and 1000 µm or less (paragraphs 0018-0019), which compares to the instant disclosure of the material for the resin film being preferably polyester resin, more preferably polyethylene terephthalate, and having a thickness of 2 µm or more and 1000 µm or less (paragraphs 0018-0019 of the instant specification). Since the materials of the electrode of the ‘441 application is substantially identical to the materials of the electrode of the instant application, the instantly claimed thermal shrinkage is considered to be present because substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01. Accordingly, the instantly claimed electrode is not patentably distinct from the electrode of the ‘441 application.
Instant claim 2 recites the conductive carbon layer has an sp2 bond and a ratio of the number of sp3 bonded atoms to a sum of the number of sp3 bonded atoms and the number of sp2 bonded atoms is 0.10 or more, whereas claim 1 of the ‘441 application recites this ratio is 0.25 or more and 0.40 or less, which lies within the instantly claimed range. See MPEP § 2131.03.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIM S. HORGER/Examiner, Art Unit 1784